Internet domain name fsa.co.uk
As the parties are aware, I was appointed to act as the independent expert pursuant to paragraph 3.5 of Nominet's Rules of the .uk and sub domains, current for the purposes of this complaint, which was raised in respect of domain name fsa.co.uk. Although the Nominet Rules relating to disputes of this type have recently changed (on 24th September 2001) the 'old rules' apply for the purposes of this complaint and my review of it. I am particularly asked to review Nominet's decision issued on 19th September 2001 and provide a written recommendation that Nominet should either confirm or revoke its decision.
In accordance with the Rules and prior to issuing such written recommendation I invited the parties to make one further submission in connection with this matter should they wish to do so. On 8th October 2001 I received by fax, a letter of that date, in which such a further submission was made by Lester Aldridge solicitors on behalf of the Registrant. They confirmed in particular that by 20th October 2001 the Registrant will have in place a changed email system from the current, so called, "wildcard system". There is also, in particular a further submission as to the 'mistake' or 'carelessness' basis of the alleged confusion which has arisen to date. I am also asked to comment upon the issue of definition of "internet users" within the meaning of the (applicable) relevant Rules. In my opinion the term 'internet user' is a broad category which includes, but does not consist only of, email users. They are terms which are not, in my view, and within such context necessarily mutually exclusive.
I have noted the comments of Lester Aldridge in relation to judicial review and/or Convention/Human Rights Act proceedings. However they do not form part of the reasoning upon which my recommendation is based. I am not aware that any such proceedings have been commenced.
The written decision of 19th September 2001 adequately sets out the background matters relating to the respective parties, the current status and sue of the domain name and a summary of the submissions which were made up to that date on behalf of the Complainant and the Registrant. I do not intend to repeat them in full hereunder but refer to that part of the decision for its helpful summaries. I should also add that in order to ensure a more up to date picture, I have recently verified that the domain name (fsa.co.uk) resolves to a website located at http://www.fsa.co.uk. This website home page has the title "Findlay Steele Associates Limited". I have spent some time perusing the contents of the website which features a great deal of detail concerning the 'Nominet dispute' and the emails which have been received by the Registrant, concerning the dispute. The Registrant has set up a 'book of support'. At the bottom of the home page there is also a direct link to the Complainant's website from a title reference "The Financial Services Authority". The domain name is used for the purposes of sending and receiving emails and browsers are invited to use the email address email@example.com. (This is reviewed in the context of the additional submission made on 8th October referred to above, relating to email traffic).
The Basis of Complaint
The relevant basis of complaint is founded on the 10th July 1997 edition of the Nominet Rules namely:
The above mentioned alternate bases are not mutually exclusive, and each envisage Nominet's consideration of actual occurrences (of confusion or issuance of legal proceedings) or the likelihood of either of those events occurring. As far as the former is concerned i.e. likelihood of confusion or actual instances of confusion I am bound to say that the Registrant appears to have taken quite considerable and reasonable steps to ensure that a browser who accesses the website would see from a reasonably superficial consideration of the text that the website is not connected with the Financial Services Authority. Further by presenting the direct link to the Financial Services Authority in the manner which they have, this disassociation appears to be reinforced.
However I am conscious that in the course of their correspondence pertaining to this matter, and in particular in an email dated 17th April 2001, in the penultimate paragraph of that letter, it is admitted, and indeed noted that the Registrant has been 'aware of the potential confusion caused by our domain name since late 1997'. (I believe that this is the correspondence erroneously referred to as dated 16th April at paragraph 16(h) of the Nominet decision). This correspondence was marked 'without prejudice' however it has been referred to in open correspondence, and also the website entries.
In any event, there seems little doubt that the Registrant has always accepted such potential for confusion, but have been keen to point the Registrant has always accepted such potential for confusion, but have been keen to point out their bona fides and understandable "pride in honesty integrity and confidentiality" of their business conduct. However as correctly stated in the Nominet decision, the good faith or otherwise of a Registrant is irrelevant to the dispute resolution service process, at least under the Rules attributable and relevant to this dispute.
The fact that there have been misdirected emails and some instances of confusion is not in dispute between the parties. Indeed on its website (although the Registrants state that they believe there is no evidence of actual confusion) they do concede and acknowledge examples of what they term 'mistakes' occurring. It also has been conceded that a financial journalist, Mr. George, was using the domain name as part of his email address in connection with an article which appeared in 'This Is Money' on 23rd October 2000 on the subject of mortgage endowments and the role of the Complainant. Obviously the subject matter of Mr. George's' article was closely related to the area of expertise in respect of which the Complainant operates. I have noted of course that the Registrant had no apparent knowledge of Mr. Fergal George or the article in question. However, it is well within the realms of possibility that third parties i.e. persons entirely unconnected with either party in this matter could reasonably use, refer to and/or publish the domain name in such a manner. In my view, this is the basis of the main concern regarding potential confusion.
As I have already stated above, I believe that the Registrant has attempted to diminish or otherwise minimise the potential for such confusion and/or any real likelihood of relevant confusion being more than initial or fleeting and is doing more in this regard by its voluntary change of email traffic system.
Nevertheless, the other basis on which the Complaint is levelled is, in my view much more significant and is, from the point of view of the Registrant unfortunately a matter in respect of which they can do little at this stage. The issue of threatened litigation is almost entirely within the hands of the Complainant. In this case no litigation has been commenced as far as I am aware, and therefore obviously there is no 'legal action which has been commenced regarding use of the name' as referred to above within the meaning of the Rules. However, on a number of occasions, the Complainant has intimated that they may commence legal action, particularly if the dispute resolution service procedure is not resolved in their favour. To this extent I do not agree with the entirety of paragraph 34 of the Nominet decision .In that paragraph Nominet conclude that they were unable to find that legal action is likely to be commenced and choose not to take any action under that ground of complaint. I am reinforced in my view that the threat of legal action is sufficiently real, when I note that the Registrant themselves seem to have accepted that such threats have been made. Hereunder I particularly refer to a letter dated 10th June 2001 sent by Elaine M. Findlay a director of the Complainant to Anna Machin, in which Ms Findlay states "There is no credible evidence to back up their threat of legal action". On the contrary, on 10th August 2001 the Registrant's solicitors, Lester Aldridge states that they are "instructed that the Financial Services Authority has indicated is does not intend to issue legal proceedings to prevent the use of the domain name by FSA".
However, the writer of the letter does not explain the basis of this understanding and I have seen nothing to suggest a withdrawal of threats has been made? In the circumstances, I do not believe that it is a safe conclusion to suggest that there is no likelihood of court action being taken. However, I do concede that the matter is far from clear, and if and insofar as the threat is made good then that is a proper basis upon which the decision of Nominet ought to be confirmed.
of court action being taken. However, I do concede that the matter is far from clear, and if and insofar as the threat is made good then that is a proper basis upon which the decision of Nominet ought to be confirmed.
In my view, the steps that have been taken to minimise or obviate the risk of material levels of confusion have been sufficient to provide credible and satisfactory evidence that notwithstanding that the ground relating to actual or likely confusion was well made out before Nominet, there is reason to recommend to Nominet that they now revoke their decision based on this ground.
However I believe that there is a basis upon which the issue of risk of litigation is not clear and would recommend that prior to deciding finally whether or not to cancel, revoke or suspend delegation of the domain name Nominet ought to reconsider this part of the Complaint. I should add that I wholly endorse the proposal set out by Nominet relating to the granting of a period during which it is hoped that a mutually acceptable arrangement regarding the use of the domain name can be made. This period expires at present at 5pm on 26th October 2001.
It is my recommendation to Nominet that such period be extended for a short time, during which my recommendations can be fully considered by Nominet and the position regarding threat of litigation can be clarified. I should note that I am not in any way encouraging the Complaint to issue proceedings or repeat any previous threats which it may have made if this is not in accordance with its current position and genuine intentions with regard to the dispute but careful consideration presumably has been or will be made with regard to formal withdrawal or verification of such position. I would be very pleased if, having considered this matter further, the parties could reach a suitable 'modus vivandi'.
In the alternative, if this matter cannot be resolved, I would recommend that Nominet review its decision to the extent of changing its proposal to cancel the registration of the domain name, and alternatively seriously considers a direction of suspension of delegation rather than cancellation. This would have the advantage of effectively maintaining the domain name in the name of the current Registrant who has demonstrated a willingness to seek to ensure minimisation of likelihood of confusion. However it would equally protect against the delegation of the domain name to a third party over whom there is no such control or degree of knowledge. It would also allow the complainant to monitor the situation and both parties would be aware that if at any stage in the future a different or refreshed basis of Complaint was justified, then the appropriate steps could be taken at that time.
In the circumstance I do encourage Nominet to review their decision with a view to revoking its currently formulated decision, thereafter with a view to replacing it with a decision in similar terms but with an extended period of opportunity for negotiation and/or verification of the status of the former apparent threat and/or finally to direct no ultimate cancellation but merely suspension of delegation of the name.
10th October 2001